Excerpt: - sections 100-a [as inserted by act 22 of 2002], 110 & 104 & letters patent, 1865, clause 10: [dr. b.s. chauhan, cj, l. mohapatra & a.s. naidu, jj] letters patent appeal order of single judge of high court passed while deciding matters filed under order 43, rule1 of c.p.c., - held, after introduction of section 110a in the c.p.c., by 2002 amendment act, no letters patent appeal is maintainable against judgment/order/decree passed by a single judge of a high court. a right of appeal, even though a vested one, can be taken away by law. it is pertinent to note that section 100-a introduced by 2002 amendment of the code starts with a non obstante clause. the purpose of such clause is to give the enacting part of an overriding effect in the case of a conflict with laws mentioned with the.....r.s. narula, j.1. this is an appeal under section 109(2) of the trade and mechandise marks act, 1958 (hereinafter referred to as the act), against the orders of shri m. d. dhanbhoora. assistant registrar of trade marks, new delhi, dated march 21, 1964, declining to register the trade mark 'uis' put in a particular form within a diamond-shaped rectangle on the application of united iron and steel works of gill road, ludhiana, in respect of hand tools and instruments in class 8 on the ground that such registration was barred by section 9(1) of the act.2. though in the application for registration of the trade mark the appellant had claimed that he had been continuously using the said mark since march 1, 1961, in respect of the goods in question, it has been observed in the order under.....

Judgment:

R.S. Narula, J.

1. This is an appeal under Section 109(2) of the Trade and Mechandise Marks Act, 1958 (hereinafter referred to as the Act), against the orders of Shri M. D. Dhanbhoora. Assistant Registrar of Trade Marks, New Delhi, dated March 21, 1964, declining to register the trade mark 'UIS' put in a particular form within a diamond-shaped rectangle on the application of United Iron and Steel Works of Gill Road, Ludhiana, in respect of hand tools and instruments in class 8 on the ground that such registration was barred by Section 9(1) of the Act.

2. Though in the application for registration of the trade mark the appellant had claimed that he had been continuously using the said mark since March 1, 1961, in respect of the goods in question, it has been observed in the order under appeal that the learned counsel, who appeared for the appellant before the Assistant Registrar, admitted that the goods in question had, in fact, been put in the market under the above-said mark only since September 1961. The application for registration in file prescribed form T. M. 1 was filed by the appellant on June 5, 1963, and was entrusted for disposal to the Assistant Registrar at New Delhi. By its letter dated August 8, 1963, the Registrar of Trade Marks at Bombay wrote to the appellant to make certain formal amendments in the application and also to state whether registration of the mark in question was desired in Part A or in Part B of the Register.

After referring to the enquiries sought to be made and to the amendments desired in the original application, the Registrar proceeded to write to the appellant in paragraphs 4 and 5 of the above-quoted communication as follows :

'4. The letters UIS are not considered prima facie distinctive or capable of distinguishing and arc not registrable in Part A of the Register except upon evidence of distinctive-ness nor in Part B of the Register without evidence of capability of distinguishing. As, however, the mark has been used only for a short period, there cannot possibly be such evidence. The mark, therefore, does not qualify for registration either in Part A or in Part B of the Register under Section 9 of the Act.

5. You should show cause why the application should not be refused for the reason stated in the preceding paragraph.'

In the same communication the appellant was directed to address all further correspondence to the Trade Marks Registry at Delhi.

3. In his reply dated September 5, 1963, the appellant authorised the requisite amendments being made in the original application and added that the appellant was 'unaware of the use of A or B part' and, therefore, authorised the registry 'to note whatever' was suitable to the appellant. No reply to the show cause notice contained in paragraphs 4 and 5 quoted above was given in the said letter of the appellant. The appellant's counsel was heard on the 3rd January, 1964. On February 1, 1964, the Assistant Registrar wrote to the appellant that he had carefully considered all the materials placed before him as well as the arguments advanced by the appellant but that the appellant's application for registration of the trade mark stood refused. On the receipt of the above order the appellant gave the requisite notice in prescribed form T. M. 15 on February 4, 1964, calling upon the Assistant Registrar to state in writing the grounds of his decision dated February 1, 1964, after the hearing of the case on January 3, 1964, and also state in writing the materials used by him in arriving at his said decision. In pursuance of the requirement of the said notice under Rule 41 (1) of the Trade Marks and Merchandise Marks, Rules, 1959, (hereinafter referred to as the Central Rules), the Assistant Registrar gave his detailed judgment dated March 21, 1964, against which the present appeal has been preferred.

4. Before the Assistant Registrar, there was no opposition by any member of the trade against the grant of the appellant's application. In support of his case the appellant had produced six affidavits including that of one of its partners. Mehar Singh, Partner of Messrs United Iron and Steel Works, stated in Ms affidavit dated November 20, 1963, that he was a partner of his firm 'which was duly registered under the Partnership Act 'since its inception, that his firm was manufacturing hand tools and spare parts for vehicles and had been using the trade mark 'UIS' applied for registration, which mark had been adopted since Ist March, 1961, and had been continuously in use since then. Mehar Singh further added in his affidavit that the business carried on by the appellant is very extensive and the goods bearing the trade mark in question had been distributed in the whole Republic of India and were known by the mark 'UIS' which mark is prominently displayed on the goods to such an extent that the appellant felt confident in stating that the said mark had become known to millions of people in this country.

Paragraphs 6 to 9 of the affidavit read as below:

'6. There is a good demand for my firm's goods under the said trade mark all over India and the fact that the goods are commonly asked for by the mark 'UIS' can be verified by few orders, letters, postcards out of the many which are attached hereto and marked as Exhibit A (collectively) received from customers residing in different places of the country.

'7. The sales of my firm goods from the date of commencement of use of the mark to the date of making the application amounted to Rs. 170974.99 nP. only as detailed as under

Year Amount1961-62 49807.791962-63 94559.461-4.1963 upto 5-6-1966 26607.74Total 170974.998. The said trade mark 'UIS' has been widely advertised in India through different media and from the date of commencement of use of the mark to the date of making the application, substantial sum of money were spent on advertisement,

9. The trade mark 'UIS' is very well known in the whole of India as indicating and exclusively referring to oar goods referred to above produced by my firm. In my opinion, the said trade mark identifies and distinguishes the said goods produced by my firm from those produced by other companies and the said mark is entitled to registration.'

5. Attached to the affidavit are a large number of original orders stated to have been received by the appellant and copies of the Invoices which were prepared in pursuance of those orders for the supply of goods indented therein. Twenty-three of these orders emanated from twelve different districts and appear to have been placed on the appellant between the period 31st August, 1961, to May 1963. These 23 specimen orders produced by the appellant relate to hand tools. It is stated by the learned counsel for the appellant and is not disputed by the other side that the original books of account of the appellant were also produced before the Assistant Registrar in support of the allegations made in paragraph 7 of the affidavit of Mehar Singh. Those books have, however, not been produced before me.

6. The second affidavit is of one Swarn Singh of Messrs Bal Singh and Sons, Nakodar Road, Jullundur, who claims to be a dealer in hand tools since 1958 and has averred that he has been purchasing and selling tools manufactured by the appellant-firm under the trade mark 'UIS'. He has added in the affidavit that the hand tools manufactured by the appellant bear the trade mark 'UIS' prominently and are well known and recognised in the trade of those associated with the appellant. Paragraphs 4 to 7 of his affidavit read as follows:

'4. That the manufacturers of the 'UIS' hand tools supply us with ample trade literature and advertisement material which are not only suggestive of the publicity but also speak of the work capacity of the goods sold by Messrs United Iron and Steel Works, Ludhiana.

7. That this affidavit has been made in reply to questionnaire sent by the Attorneys acting for the said Messrs United Iron and Steel Works. Ludhiana.'

7. Jodh Singh, partner of Messrs Gill Radio Electric Corporation, Patna, Brij Mohan. partner of Messrs Modern Industries, G. T. Road, Jullundur City, Bubu Lal of Messrs B. Gangahar Engineering Co. Ludhiana, and Ram Saroop, partner of Messrs Ranbir Engineering and Mill Store Co., Ludhiana, have sworn affidavits, which are almost verbatim copies of the deposition of Swarn Singh contained in big affidavit referred to above. The only variation in these affidavits relates to the details of the entries from the relevant account books of the respective dealers. The explanation for their being almost verbatim copies of each other is contained in paragraph 7 of Swarn Singh's affidavit which is repeated in all others except that of Mehar Singh. No other evidence was produced in this ease before the Assistant Registrar.

8. In his order under appeal the Assistant Registrar has held that all that he had to consider was whether the appellant's, mark fall's within Section 9(1)(e) of the Act as a distinctive mark so as to qualify for registration 'as letters do not fall within paras (a) to (d) of the section.' Taking the expression 'distinctive' as uses in Section 9(1)(e) of the Act to mean 'adapted to distinguish' the learned Assistant Registrar went into the question of the extent to which the use of the mark or other circumstances of the case had rendered the mark in fact distinctive. Comparing the figures of turn over contained in the affidavit of Mehar Singh in this case with the figures of turn over given by the appellant in another application for registration of the identical mark in connection with cycle parts and motor vehicle parts, the Assistant Registrar has held that the figures in question represent the total turn over of the firm's goods and not only in respect of hand tools. On cheeking fell the books of accounts of the appellant, the Tribunal found that the appellant deals in a wide variety of goods.

Reference is then made to the statement of the counsel given before the Assistant Registrar to the effect that though the appellant company had started functioning from March 1961, the good's in question were actually put in the market in September that year. On that basis it was held that the mark in question had been used by the appellant for 21 months prior to the filing of the application for registration. No publicity material was produced before the Assistant Registrar. Evidence of the dealers comprised in their affidavits was held to be not convincing as it appeared to the Assistant Registrar 'to consist of a parrot-like repetition of tutored statements' The evidence in question was also held to be inadequate to show that the mark in question had become prima facie adapted to distinguish so as to qualify for registration in part A of the register.

9. On the question of registration of the mark in dispute in part B of the register as permitted by Section 19(5) of the Act, the Assistant Registrar held as follows:

'I have considered the alternative possibility of accepting the mark in Part B of the Register Here again the question is to be decided on examination of the mark itself and for the reasons stated when dealing with the question of inherent distinctiveness, a trade mark consisting of letters per se cannot be regarded as inherently capable of distinguishing.'

10. Relying on certain observations of the Chancery Division in the matter of Ford-Werke A. G's application for a trade mark (1955) 72 R. P. C. 191, the Assistant Registrar held that the mark in question had not acquired distinctiveness by continuous extensive use and the evidence produced by the appellant was insufficient to hold that the requisite distinctiveness or the capacity to distinguish had been created by the use of the mark in question to qualify for registration in Part B of the register. In the end, the Assistant Registrar attributed uncandid conduct to the appellant and described the appellant's evidence as suffering from lack of frankness and for those two reasons chose to exercise his discretion against the acceptance of the application for registration.

11. Before proceeding to deal with the arguments of the learned counsel for the parties, it would be appropriate to refer to some of the relevant provisions of the Act and the Rules. Section 9 of the Act reads as follows:

'9 (1). A trade mark shall not be registered in Part A of the register unless it contains or consists of at least one of the following essential particulars, namely:--

(a) the name of a company, individual or firm represented in special or particular manner:

(b) the signature of the applicant for registration or some predecessor in his business;

(c) one or more invented words;

(d) one or more words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India;

(e) any other distinctive mark.

(2) A name, signature or word, other than such as fall within the descriptions in Clauses (a), (b), (c) and (d) of Sub-section (1) shall not be registrable in Part A of the register except upon evidence of its distinctiveness.

(3) For the purposes of this Act, the expression 'distinctive' in relation to the goods in respect of which a trade mark is proposed to be registered, means adapted to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists either generally or, where the trade mark is proposed to be registered subject to limitation, in relation to use within the extent of the registration.

(4) A trade mark shall not be registered in Part B of the register unless the trade mark in relation to the goods in respect of which it is proposed to be registered is distinctive, or is not distinctive but is capable of distinguishing goods with which the proprietor of a trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration

(5) In determining whether a trade mark is distinct or is capable of distinguishing as aforesaid, the tribunal may have regard to the extent to which--

(a) a trade mark is inherently distinctive or is inherently capable of distinguishing as aforesaid; and

(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish or is in fact capable of distinguishing as aforesaid.

(6) Subject to the other provisions of this section, a trade mark in respect of any goods--

(a) registered in Part A of the register may be registered in Part B of the register; and

(b) registered in Part B of the register may be registered in Part A of the register; in the name of the same proprietor of the same trade mark or any part or parts thereof.'

12. The word 'mark' is denned in Section 2(1)(j) of the Act to include amongst other things a name, a word, a letter or any combination thereof. 'Name' has been defined in Clause (k) of Sub-section (1) of Section 2 of the Act to include 'any abbreviation of a name'. Section 18(5) authorises the Registrar to treat an application for registration of a trade mark in Part A of the register as an application for registration of the same trade mark in Part B of the register instead of refusing the application for registration in Part A if the applicant so desires and to deal with the application accordingly. Section 99 of the Act provides that in any proceedings under the Act evidence shall be given before the Registrar by affidavit though the Registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to, such evidence on affidavits. Section 103 of the Act provides for obtaining advance advice of the Registrar on the question whether a particular trade mark appears to the Registrar prima facie to be inherently adapted to distinguish or capable of distinguishing, as the case may be. Section 109(2) of the Act confers the right of appeal to the High Court against certain decisions of the Registrar including one refusing to register a trade mark.

In exercise of powers conferred by Section 133 of the Act, the Central Government has framed the Trade Marks and Merchandise Marks Rules, 1959. Rules 25, 26 (1), 27, 39, 41 and 121 of the Central Rules read as follows:

'25. Form and signing of application:

(1) An application to the Registrar for the registration of a trade mark shall be signed by the applicant or his agent.

(2) For a trade mark other than a certification or defensive trade mark, the application shall be made on Form TM-1, if in respect of non-textile goods.

26. Application to be confined to one class etc. (1) Every application for the registration of a trade mark shall be in respect of goods comprised in one class only of the Fourth Schedule.

27. Statement of user in applications. An application to register a trade mark shall, unless the trade mark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of the goods mentioned in the application. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used.

39. Objection to acceptance. Hearing.-(1) If, on consideration of the application, and of any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish, the Registrar has any objection to the acceptance of the application or proposes to accept it subject to such conditions, amendments, disclaimers, modifications or limitations as he may think right to impose, the Registrar shall communicate such objection or proposal in writing to the applicant.

(2) If within three months from the date of the communication mentioned in Sub-rule (1), the applicant does not amend his application according to the proposal aforesaid, or submit his observations to the Registrar or apply for a hearing, the application shall be deemed to have been abandoned.

41. Decision of Registrar. (1) The decision of the Registrar under Rule 39 or Rule 44 after a hearing, or without a hearing if the applicant has duly communicated his observations in writing and has stated that he does not desire to be heard, shall be communicated to the applicant in writing and if the applicant intends to appeal from such decision he may within one month from the date of such communication apply on Form TM-15 to the Registrar requiring him to state in writing the grounds of and the materials used by him in arriving at his decision.

2. In a case where the Registrar makes any requirements to which the applicant does not object, the applicant shall comply therewith before the Registrar issues a statement in writing under Sub-rule (1).

(3) The date when the statement in writing under Sub-rule (1) is sent shall be deem ed to be the date of the Registrar's derision for the purpose of appeal.

121. Time for appeal.-- An appeal to a High Court from any decision of the Registrar under the Act or the Rules shall be made within three months from the date of such decision or within such further time as the High Court may allow'

13. In the circumstances of this case and on account of the provisions of Sub-section (5) of Section 18 of the Act, it was the duty of the Assistant Registrar to register the trade mark in question either in Part A or Part B of the Register if the mark was found to be registrable and if there was no bar to its registration in spite of the fact that the appellant had not specifically asked for having his application considered for either of the two parts of the register. Shortly put, the difference in registration in Part A as distinguished from Part B of the register seems to be that whereas for registration in Part A the trade mark in question must have been adapted to distinguish the goods of the applicant from other similar goods, it would be enough for entitling the applicant to have his mark registered in Part B of the register if either the mark had been adapted to distinguish or possesses the potentialities of being capable of distinguishing the goods of the applicant from other similar goods. Whereas for purposes of Part A the mark must be 'distinctive', the mark would be entitled to be registered in Part B even if it is not distinctive but is capable of distinguishing the goods with which the applicant is connected in the course of his trade. The Assistant Registrar has rightly in this case considered the application of the appellant both for Parts A and B of the register though even in reply to the registry's specific enquiry the appellant did not pin himself down to any of the two positions.

14. Irrespective of whether the application is for registration of the mark in Part A or Part B of the register, the Tribunal has to consider the extent to which a trade mark is inherently distinctive or is inherently capable of distinguishing the goods of the applicant; and the extent to which the trade mark is, in fact, adapted to distinguish the goods of the applicant or (in case of Part B) is capable of distinguishing the same.

15. No trade mark can be registered in Part A of the register unless it contains or consists of at least one of the particulars specified in Clauses (a) to (e) of Sub-section (1) of Section 9 of the Act. Whenever an application is made to the registry under the Act for registration of a trade mark in Part A of the register of trade marks, it is the duty of the Registrar to exclude the applicability of each one of the essential particulars mentioned in Clauses (a) to (e) of Sub-section (1) of Section 9 before be can decline to register the mark. If the mark in dispute contains or consists of even one of the above-mentioned particulars, the Registrar will have no jurisdiction to reject the application for registration on the ground that it does not fulfil the requirements of Sub-section (1) of Section 9 of the Act. The section also envisages the possibility of any given mark containing or consisting of more than one of the essential particulars enumerated in Section 9(1) of the Act. In my opinion, a duty had been cast on the Assistant Registrar in this case to consider the case of the appellant under Clauses (a) to (d) of Section 9(1) of the Act also even though the appellant had not specifically asked for it before rejecting the application for registration None of the Central Rules requires an applicant for registration of a trade mark to specify one or more of the clauses of Section 9(1) by which he claims his case to be covered if he wants the mark to be registered in Part. A. This would not, however, bar the Registrar to enquire from an applicant in an appropriate case as to the specific claim of the applicant in this behalf under one or more of the clauses of Section 9(1) of the Act.

In a case where such an enquiry is made and the applicant specifically commits him self to a particular clause, it would no more be the duty of the Registrar to deal with other possible alternatives mentioned under the clauses though there would be nothing to prohibit Mm from doing so if he so desires. The Assistant Registrar held this case to be not covered by any of these Clauses (a) to (d) as he appears to have thought that the mark in dispute consisted only of three letters and did not, therefore, fall within any of those clauses. This finding of the Assistant Registrar has been attacked before me by Shri N. S. Keer, learned counsel for the appellant. Counsel has argued that the appellant's trade mark 'UIS' consists of the name of its firm 'United Iron and Steel Works' in an abbreviated form; and, in the alternative, consists of an invented or concocted word, which he pronounces as 'YOUIS' and it is on this basis that the appellant claims to have been entitled to a finding in his favour voider Section 9(1) (a) or (c) respectively. This argument, urges counsel, is not in substitution of the claim for registration in Part A on account of alleged compliance with Clause (e) of Sub-section (1) of Section 9 of the Act but in addition thereto.

In short, the case of the appellant is that his trade mark in question consists of the essential particulars mentioned in Clause (a) as well as in Clause (c) and also contains a distinctive mark as envisaged in Clause (e) of Sub-section (1) of Section 9 of the Act. Under Section 9(1)(a) of the Act the case of the appellant is that the name of the firm is United Iron and Steel Works, which is entitled to be registered as of right; that 'UIS' is the abbreviation of the name of the firm which under Section 2(1)(k) of the Act is equated to the name itself. 'Mark' includes a name as provided in Section 2(1)(j) of the Act. 'Name' includes its abbreviation. Firm name is registrable under Section 9(1)(a) of the Act if it satisfies the other conditions of the statute. But the learned counsel for the appellant appears to forget the second essential ingredient of Clause (a) of Section 9(1) of the Act which is that the mere name of a company, individual or firm is not registrable in Part A unless the name is represented in a 'special' or 'particular' manner.

16. Mr. N. S. Keer stated that Clause (a) is new and was not there in the Trade Marks Act V of 1940. On this basis he urged that eases under Section 6 of the 1940 Act should be ignored as they are not relevant. I regret to notice that Mr. Keer is not correct in his submission. Section 6 (1) (a) of the 1940 Act is verbatim the same as Section 9(1)(a) of the 1958 Act as also Section 9 (1) (a) of the United Kingdom Trade Marks Act, 1938. In fact, the relevant provisions of Section 9 of the 1958 Act are almost the same as those of Section 6 of the 1940 Act, which in turn appear to have been substantially borrowed from Sections 9 and 10 of English Act of 1938. In the view I am taking of the requirements of Clause (a) it does not appear to me necessary to decide the other argument advanced by Mr. Keer relating to this branch of the appellant's claim to the effect that no evidence of distinctive character is required for cases falling under Clauses (a) to (d) of Sub-section (1) of Section 9 as distinguished from cases falling under Clause (e) thereof because of the provisions of Sub-section (2) of that section.

Shri C. D. Dewan, learned counsel for the respondents, urged that even if an abbreviation of a firm name can be claimed to be covered by Clause (a), it is only such an abbreviation as would itself be a name of some kind which would be so covered. Once again, it does not appear to me necessary to decide in this case, whether 'name' in Section 9(1)(a) of the Act can include part of a name or abbreviation of a name or it must in all cases mean full name of the firm, individual or company. Prima facie it appears to me that by virtue of operation of Section 2(1)(k) of the Act an abbreviation of a firm name would come within .'name' as used in Section 9(1)(a) of the Act. What is absolutely wanting in this case is that even if it could be assumed that 'UIS' is the name of the appellant-firm by being an abbreviation of the name, the name has not been represented in the disputed trade mark in any 'special or particular manner'. Special or particular manner is referred to in the section in contradistinction to a somewhat ordinary manner. It does not, however, mean that if instead of writing the letters of a name in uniform sizes the letters thereof are written in different sizes or if such letters are merely fitted into a circle, an oval, rectangle or diamond-shaped enclosure, the mark can be said to have been represented in any special or particular manner.

The intention of the requirement of representation in a special or particular manner is to prevent a trade mark consisting of a mere name from being so taken as a mark that any manufacturer or trader might unwittingly and unintentionally infringe the trade mark by an honest use of his own name or that of his firm or the abbreviation of either one of them. In Fanfold Ltd.'s Application, (1928) 45 RPC 325, the registration of a trade mark consisting of the words 'Fanfold Limited' above a scroll, which showed a flourish at each end, was refused by the Registrar on the grounds that the name itself was the only important feature of the mark but the same had not been represented in any special or particular manner as the device of a scroll, the only other feature of the mark, was a well-known one, which any printer might use. The order of the Registrar was upheld by the Court of appeal.

The device of straight lines on all the four sides of 'UIS', the only other feature of the disputed trade mark in the instant case is of very common use and cannot be described to amount to representation of the words 'UIS' in any special or particular manner. The distinction in the representation is required so that the particularity or speciality in the representation itself may be indicative of the goods on which the mark is put as the goods of the proprietor of the mark. The representation of name or abbreviation of a name in capital letters, though of different sizes, would not, in my opinion, come within the statutory requirement of representation in a special or particular manner. Nor would the mere embellishment of lines, whether straight, oval or curved, convert the use of mere letters into a trade mark except in a ease where there is inherent distinctiveness in the mark as a whole. It is possible that the special or particular manner may be attached to the name itself or may in some cases be a part from or in addition to the name, but from whatever angle the matter is looked at, there must be some such extraordinary special or particular manner of representation, which is not of common use.

I think the trade mark of the appellant said to be the 'name' of the firm is lacking in the necessary ingredients of having been represented in a special or particular manner and is, therefore, not registrable in Part A of the register, though the order of the Assistant Registrar in this respect does not appear to have been correct as there is nothing to prohibit ft trade mark consisting of certain letters of English alphabet being registered provided it fulfills the requirements of one or more of the five particulars mentioned in Clauses (a) to (e) of Section 9(1) of the Act.

17. It was then claimed on behalf of the appellant that the mark in question contains the essential particular mentioned in Para (c) of Section 9(1) as the mark consists of an invented word not otherwise known to the English vocabulary. Mr. Keer has twisted his tongue in order to pronounce with some difficulty the alleged coined word 'YOUIS' written as 'UIS'. Though it is not necessary, it is common that invented words intended to serve as trade marks are usually easy to pronounce as the man in the street is expected to associate things of a particular manufacture with that particular mark which, in the case of an invented word, normally has a phonetic significance.

18. Whether the applicant has, in fact, invented or devised a new word to be used as a mark to distinguish his goods from those of others or not, is essentially a question of fact to be determined in the circumstances and on the evidence adduced in each case. But I would expect at least a clear allegation of a new word having been invented by a manufacturer being made by the applicant for registration of the mark consisting or comprising of that word either in his application at least somewhere in the evidence led by him. It is only then that the Registrar can justly be expected to adjudicate upon a claim of this type.

In a claim for registration of a trade mark in Part A of the register under para (c) of Sub-section (1) of Section 9 of the Act, the applicant should give some particulars of how the word in dispute was invented and an assertion to the effect that the word as such has no meaning in any language and has not been invented and used before. It may or may not be necessary for an applicant to give all the details but it would certainly be proper to at least say that it is a coined word in order to help the Tribunal to direct its mind to come to a correct and proper decision on the subject. The appellant in the instant case filed an affidavit of its partner Mehar Singh before the Assistant Registrar. It is nowhere suggested in the affidavit that the appellant had invented 'UIS' as a new word for being used as a mark in respect of his goods. The affidavit is not only silent in this behalf but, on the contrary, it is suggestive of 'UIS' being an abbreviation of the appellant-firm's name. To me, it appears that this point is being taken for the first time at the appellate stage due to mere ingenuity of counsel.

In order to sustain a claim under para (c), it has not only to be proved that the word in question is not found in any dictionary but it has also to be shown that the word is even otherwise unknown in the languages which are commonly spoken in the country. The word must not indicate any obvious meaning. It must have been coined for the purpose of being applied to certain particular type of goods though it may have been used before its registration. In order to sustain a claim for registration, the word in question may not have been coined by the applicant himself but by someone else though evidence of the applicant himself having coined it would certainly be of value. It has been constantly held that ordinary words do not become distinctive and coined merely by being misspelt or by incorporating therein some variations or alterations or which are spelt phonetically, fantastically or conventionally or which are ordinary slang words, even though they are not found in a dictionary.

Some of the examples of invented words, which have been accepted for registration, are 'Kodak', 'Kynite', 'Savonol', 'Solio', 'Ferodo', 'Dustic' etc. But registration of words such as 'Formalin', 'Absorbine', 'Bioscope' etc. has been refused. One of the cases where registration of a coined word was refused appears to be more near the case of the appellant. In re, Garrett's application, (1916) 33 RPC 48 for registering the trade mark comprising the word 'Ogee' (phonetically equivalent to 'O. G.') was refused by the registry of trade mark in England and the order was upheld by the Court of Appeal. What Mr. Keer is asking me to do is to act in the reverse direction Merely because he can pronounce 'UIS' as 'YOUIS' does not make the otherwise simple three letters into a coined word.

19. It also appears to me that the moment the appellant lays his claim under Clause (a), that is, he tells this Court that 'UIS' is merely an abbreviated form of his firm name, he destroys his case under Clause (c), that is, he wipes out the claim to the effect that the three letters do not convey sense of any kind Law of pleadings, no doubt, allows inconsistent pleas to be raised but one can raise mutually destructive alternative pleas only at one's own peril. Looking at the affidavits and circumstances of the instant case. 1 am inclined to think that 'UIS' represents merely an abbreviation of United Iron and Steel Works, and is not an invented word. In this view of the matter the appellant does not appear to have made out any case under Clause (c) of Sub-section (1) of Section 9 of the Act. In any event, in the conspicuous absence of even an averment in the appellant's affidavit about the incidence of the mark 'UIS' and about the appellant having coined or devised it as a new word, I am not at all satisfied that alleged word can properly be taken to have been invented by the appellant.

20. In the view I have taken of the factual aspect of the appellant's case on this score, it is needless to go into a detailed discussion of the case law on the subject. In order to be fair to the counsel, however, I may mention that reference was made before me in this behalf to the cases hereinafter mentioned. Counsel first cited the judgment of the House of Lords in the famous Solio case in the matter of an application of the Eastman Photographic Materials Co. Ltd., for a trade mark, (1898) 15 RPC 476. To say the least, nothing said in that case appears to me to help the contention of either side in the appeal before me.

21. Mr. Keer referred to the Minigroove's case in the matter of Philips' Phonographische Industrie's application for a trade mark, (1955) 72 RPC 183. In that case it was held that an invented word has to be such a word which cannot fairly be said to have an obvious meaning in that which conveys a distinctiveness as its primary indication to the person who sees or hears it. Chancery Division of the High Court of Justice in England upheld the order of the Assistant Comptroller, who had declined to register the trade mark 'Minigroove' on the ground that the mark did not qualify for registration under Section 9 of the U. K. Act (which corresponds to Section 9 of our 1958 Act). I have not been able to appreciate how the judgment in Philips' Phonographische Industrie's case, (1955) 72 RPC 183 can possibly help the appellant.

22. Reference was lastly made on this subject to the Magnolia case--in the matter of the Magnolia Metal Co.'s trade marks, (1897) 14 RPC 265. The question, which was decided by the Chancery Division of the High Court of Justice in England in that case, was entirely different from the question agitated before me in this appeal. It was nobody's case that 'Magnolia' was a new or invented or coined word. It was the name of a well-known flower and also the name of at least 22 towns in United States. The judgment of the Court of Appeal in (1897) 14 RPC 265 (supra) is, therefore, of no use in deciding this point.

23. In these circumstances, the appellant cannot succeed even under para (c) of Sub-section (1) of Section 9 of the Act.

24. This brings me to the main point dealt with in the order under appeal, that is, the registrability of the mark as satisfying the requirement of Section 9(1)(e) of the Act. The question which arises is again a question of fact mainly depending upon evidence and opinion. The question is whether the mark sought to be registered is 'distinctive' or not. For purposes of Part A of the register 'distinctive' means 'adapted to distinguishing' goods manufactured by the trader. For purposes of Part B it is enough if the mark is 'capable of distinguishing' the goods in question even if it is not 'adapted to distinguishing' them. Sub-section (5) of Section 9 provides that in determining whether a trade mark is distinctive or is capable of distinguishing as aforesaid, the Registrar may have regard to the extent to which a trade mark is inherently distinctive or is inherently capable of distinguishing and the ex-lent to which the trade mark is, in fact, so adapted to distinguishing by reason of the use of the trade mark or any other circumstances.

The extent to which the actual user down to the date of the application has, in fact, rendered the mark distinctive of the applicant's goods is to be considered in order to find out if the mark has been adapted to distinguishing those goods. The probability or improbability of distinctiveness being maintained in the future has to be considered in determining whether the mark is capable of distinctiveness or not. The extent to which registration would control the freedom of a manufacturer who may have a different name, the initials of which might happen to be the same and who may subsequently embark on the manufacture of same kind of goods, has also to be taken into account.

One of the recognised tests for determining distinctiveness is whether registration would tend to protect the public from imposition or the result would be reverse of it. The principle is that by using the name of an individual or of a firm as a trade mark, no one should be allowed to prevent any person or firm of a same or similar name from using its name or initials in connection with the goods manufactured by the second firm. At the same time if the initials or the name or part of the name has by constant and extensive use acquired distinctiveness, the mark may become entitled to registration under Clause (e). Except in the case where the trade mark offered for registration is inherently and prima facie distinctive, the burden of proof is on the applicant to satisfy the Tribunal that the word is in the circumstances of the case adapted to distinguish his goods within the meaning of Section 9 of the Act. No hard and fast rule can be laid down as to the extent of evidence required to prove distinctiveness. This would vary from case to case.

25. The appellant's case seems to be that though the mark 'UIS' denotes the initials of 'United Iron and Steel Works', it is entitled to be registered as the mark has been used for a long period and has been universally recognised in a substantial part of this country by a large number of persons as indicating the goods manufactured and put out for sale by the appellant. A resume of the evidence adduced by the appellant has already been given in an earlier part of this judgment. The comments of the Assistant Registrar on that evidence are not very charitable. He has first observed that all the six deponents, who have sworn affidavits, have given out parrot like repetition of a tutored statement. The circumstances in which the statements of the five deponents, other than Mehar Singh, have been drawn, have been explained in paragraph 7 of those affidavits themselves. The appellants did not conceal the fact of the affidavits having been drafted by the appellant's attorneys. I fail to see anything wrong with this.

The relevant figures have been filled in by the various deponents from their own books. They have referred to the entries in their books on the basis of which the rest of the averments in the affidavits have been made. If the Assistant Registrar doubted any part of the statements of those witnesses, he could have proceeded under Section 99 of the Act to call them, to test their veracity or to impeach their credit. Their books could have been called and inspected. I think that in the absence of any such course having been adopted, it is rather uncharitable to these witnesses to proceed to disbelieve them without there being any valid ground on the record to do so. In the circumstances of this case and in the absence of any interest of those five independent persons in the appellant having been brought out or any reason for their choosing to give false evidence having been suggested, I would believe their depositions as contained in their affidavits.

26. With the affidavit of Mehar Singh, partner of the appellant-firm, a large number of vouchers were filed which are collectively referred to in the body of the affidavit. The learned Assistant Registrar has made no reference whatever to those annexures while referring to the material on which he has based his order. These vouchers consist of the original orders placed on the appellant from August 1961 to May 1963 by different dealers of different places. To each indent is attached a copy of the invoice of the appellant showing that the goods were, in fact supplied. Each of the relevant indent describes the goods indented with reference to the trade mark 'UIS'. A reference to these vouchers does show that the appellant has been engaged in extensive business spread over different States and has been dealing with substantial number of persons, who have been openly associating the mark 'UIS' with the goods manufactured by the appellant to distinguish them from the goods of the same type manufactured by others. The authenticity of the vouchers was capable of being checked with the books of account of the appellant which were admittedly produced before the Assistant Registrar It has not been suggested by anyone that on such a check being made, any of the vouchers, indents or invoices was found to be of any suspicious nature.

27. Non-production of publicity material and copies of advertisement has also been commented upon by the Tribunal under the Act. The Rules do not require the applicant to produce any such material suo motu. Of course the Act places on an applicant the burden of proving distinctiveness of the trade mark claimed to be registrable under Clause (e).

But in a case where no one out of the trade appears to object to the registration, an applicant is justified in assuming that if the evidence adduced by him is found to be wanting in some particular respect, the Assistant Registrar would point this out to the applicant and give him an opportunity to fill in the gap. I may not be understood to suggest that it is the duty of the Assistant Registrar to help the applicant to make out or prove his case But if the Assistant Registrar felt that the allegation of the appellant in his affidavit to the effect that large amounts had been spent by the appellant on publicity etc. was wanting to be substantiated he should have checked up the books of accounts of the appellant in this respect and also called upon the five witnesses, who had sworn affidavits, to produce the publicity material referred to in their affidavits.

28. The extent of turn-over claimed by the appellant has been brushed aside by the learned Assistant Registrar on the ground that the figures mentioned by the appellant do not relate only to the goods of the class in which the trade mark is sought to be registered but also include his other goods for which a separate application for registration has been made and is stated to be still pending. The extent to which a particular trade mark has been adapted to distinguish by being used by a particular manufacturer would normally depend upon the extent relating to all the goods manufactured by the particular applicant and not necessarily goods in one particular class. Some of the vouchers show that the mark was being used by the appellant in respect of the goods in question since the end of August 1961. This is practically the same thing as held by the learned Tribunal that actually sale of hand tools with the trade mark 'UIS' started in or about the beginning of September 1961.

But even those 21 months prior to the making of the application constituted a substantial period of about two years. By now five years have expired during which period the appellant has been manufacturing and selling his goods stamped with the trade mark in question. There is nothing to show that the use of the trade mark by the appellant has at any stage not been continuous since it was started in 1961. I have already found that the use has been extensive. From the evidence on record I find that 'UIS' stands for the initials of the firm name of the appellant, that the appellant had been using the said trade mark for a little less than two years prior to the making of his application and now for about five years continuously and hat there is no material to justify disbelieving the extent of the appellant's turn-over as disclosed by him in Mehar Singh's affidavit and in the appellant's books of account.

29. Cases are not rare where initials of firm names acquired distinctiveness by long and extensive use in relation to the goods manufactured by particular firm. The trade mark of the well-known BSA cycle was registered as BSA though the trade mark comprised merely initials of the manufacturers, whose company was known as 'Birmingham Small Arms Company Limited' Reference was made by counsel to the judgment of the Chancery Division in the matter of the Birmingham Small Arms Co.'s application for a trade mark, (1907) 24 RPC 563. But there is not much to be found in that judgment on the question with which I am concerned in the instant case. Trade mark 'BSA' had already been registered for arms and ammunition manufactured by that company in class 19. An application was then made for registering the same mark for cycles, motor cycles etc. in class 22. The Registrar allowed registration on the condition of association. The Court of appeal reversed the order of the Registrar and held that no confusion was likely to arise by registration being allowed without association. The case is, however, helpful only to the extent that no fault was found to the registration of the letters 'BSA' representing initials of the manufacturer's name represented in a special manner. The judgment shows that the factum of the mark having been adapted to distinguish was Hot even questioned in that appeal.

30. Mr. C. D. Dewan, appearing on behalf of the respondents, placed reliance on the judgment of the House of Lords in the matter of applications by W and G.Du Cros Limited for the registration of trade marks, (1913) 30 RPC 660 for the registration of their trade mark 'W & G'. In that case two marks were offered for registration. First was the mark 'W & G' in script and the other was the same mark printed in block type. The Court of Appeal had allowed the mark in script to proceed to advertisement but had rejected the mark printed in block type. The Registrar of Trade Marks was not satisfied with the order of the Court of Appeal and went up to the House of Lords. It was held that since the use of the letters 'W & G' would On their registration be claimed as an infringement of the trade mark and many people might be entitled to use those letters, the applications for registration of both the marks were liable to be rejected. The test laid down by the House of Lords to determine distinctiveness was whether the mark is of such a kind that the applicant, quite apart from the effects of registration is likely or unlikely to attain the object he has in view in asking for registration

The chance of success of an application for registration in this respect was held by the House of Lords to depend upon whether other traders are likely in the ordinary course of their business and without any improper motive to desire to use the same mark or some mark nearly resembling it upon or in connection with their own goods. The cars of the applicant company in that case were marked 'W & G' because those were the initial letters of the Christian name of the partners of the firm, which manufactured the vehicles In this connection, it was observed in the aforesaid judgment that initials are even less adapted for trade mark purpose than names and the same could not be deemed distinctive within the meaning of the English Act. It was held by the House of Lords, after considering the entire facts and circumstances of the case, that the area within which and the period during which the alleged distinctiveness had existed, were insufficient to displace the opinion formed about the initials of name on general grounds. The Registrar's appeal, therefore, succeeded before the House of Lords and the cross-appeal of the applicant company was dismissed.

31. Counsel also referred to the judgment of the Chancery Division in the matter of an application by the British Thomson-Huston Co. Ltd. to register a trade mark, (1917) 34 RPC 169. The application of that company for registration of a trade mark consisting of a circle with three scrolls springing from the inside with the letters 'B.T.H.' within the circle, the ground work inside the circle being of a dark colour and of an embossed character, was rejected by the Registrar on the ground that the mark consisted only of letters and common place additions. On the applicant's appeal in the High Court of Justice, it was held, on the evidence available on the record of the case, that the mark applied for had become distinctive of the applicant's goods and business and that the mark was a compound mark and must be looked at as a whole and the Registrar had exercised his discretion by taking into consideration the ground, which he ought not to have considered. The judgment of the Chancery Division in the B.T.H's case, (1917) 34 RPC 169 (supra) appears to me to be of definite help to the appellant. It was held in the B.T.H.'s case, (1917) 34 RPC 169 that the decision in the W and G's case, (1913) 30 RPC 660 (supra) was confined to the question of initials, and initials only and that whether initials were forming part of a larger device or are distinctive is not touched upon in the W & G's case at all. The Court of appeal held that even if the mark B.T.H. was not distinctive for the reasons given by the Registrar, it had, in fact, by use for many years assumed a distinctive character.

32. The next case, to which a reference was made before me in this appeal is the judgment of a Division Bench of the Calcutta High Court (K. C. Das Gupta, C. J. and H. K. Bose, J.) in E. Griffiths Hughes Ltd. v. Vick Chemical Co., AIR 1959 Cal 654. In that case it was held that 'Vapo Rub' was not an invented word but it was entitled to and was allowed to be registered under Clause (e) of Sub-section (1) of Section 6 of the 1940 Act on evidence of acquired distinctiveness. Taking into consideration the affidavits filed on behalf of Vick Chemical Company, it was held that the mark 'Vapo Rub' had been continuously in use in India since before February 1937 till the date of application for its registration, and, had therefore, acquired sufficient distinctive-ness, in fact, to entitle the mark to be registered.

33. There is no statutory requirement of the number of years or exact extent of the period after the expiry of which a mark may be deemed to have acquired distinctiveness. This would depend on the facts and circumstances of each case. A period of about two years on the facts of this case, as brought out in the affidavits and the accompanying vouchers, appears to me to have enabled the mark of the appellant to acquire distinctive-ness.

34. The trade mark rights are property rights and have to be as jealously safeguarded as any other legal right of a citizen. These rights of traders, big or small, are entitled to protection. The Act aims at protecting the interest of owners of trade marks as well as interests of the public. In a country like ours where industry is progressively developing, registration of a genuine, legal and valid trade mark may go a long way in establishing an industrial enterprise. Whenever, therefore, it is found that a trade mark offered for registration is registrable and there is no bar to it and its registration is not likely to injure the public interest, it must normally be brought on the register of trade marks

35. It has been lastly contended by Mr. C. D. Dewan that the Assistant Registrar having, in his discretion, declined to register the mark in question, this Court should be loath to interfere in the order under appeal unless it is found that the Tribunal has departed from the recognised principles of sound judicial discretion. The learned counsel relied in this connection on the judgment of Calcutta High Court (P. B. Mukharji and R. S. Bachawat, JJ.) in London Rubber Co. Ltd. v. Durex Products (Incorporated), AIR 1959 Cal 56, wherein it was held that though the opinion of the Registrar can be revised in an appeal but the statute has made the Registrar's opinion as the first standard on the question and that unless the standard is obviously not discharged, the High Court should hesitate on a disputed question of fact to take a contrary view on the ground merely that a different view is possible. The question of fact, which was in dispute in that case, was about the alleged concurrent use of the trade mark 'Durex'.

36. The next case to which Mr. Dewan referred in this connection was an unreported judgment of the Hyderabad High Court in G. Balakrishnayya v. Registrar of Trade Marks for Hyderabad, AIR 1955 NUC Hyd 2361. According to the AIR head-note of the unreported judgment, the Registrar exercises discretion in coming to the conclusion whether a particular trade mark should or should not be registered and the appellate Court would always be reluctant to interfere with that discretion unless the conclusion arrived at by the Registrar is clearly wrong or perverse.

37. The principles for interference in a discretionary order by a Court of appeal in exercise of statutory appellate powers are well known. Questions of this type are approached by the appellate Court with a leaning in favour of the decision of the Registrar. Though the discretion of the Registrar has been subjected by the statute to review by the High Court, the discretion is nevertheless intended principally to be exercised by the Registrar. If the Registrar has exercised the discretion in a judicial manner it should not readily be upset by the High Court. These considerations relate more to decisions on technical matters than to findings of fact depending upon appraisal of evidence and pure questions of law. On such matters, that is, on questions of fact depending upon appraisal of evidence and upon questions of law, the High Court, as a Court of Appeal, is entitled to come to its own finding as on the re-hearing of a case. In technical matters the Registrar is expected to have a much larger experience as he is expected to be continuously hearing objections and answers to objections as to registrability of trade marks and the Court of Appeal ought not to depart readily from his conclusion in that behalf.

The main point on which the learned Assistant Registrar appears to have erred in the instant case is about the finding of fact based on evidence produced by the appellant regarding his mark having or riot having acquired distinctiveness by use over a period of about 21 months. If the finding arrived at by me on this point is substituted for the finding of the Assistant Registrar, the judgment of the Tribunal below almost automatically stands reversed. This is, therefore, not a case where the High Court in accepting this appeal is really interfering with the discretionary part of the order under appeal.

38. In the circumstances referred to above, I hold:

(1) If an applicant does not restrict his application for registration of a trade mark in Part A of the register alone, the Registrar should consider the application as for both the parts, that is, for Part A as well as for Part B of the register;

(2) For registration in Part A, it is necessary that the mark in question should be adapted to distinguish the goods of the applicant from similar goods of other parties;

(3) In the absence of a specific claim of distinctiveness under any particular clause of Sub-section (1) of Section 9, the Registrar must exclude the applicability of all the five clauses (a to e) before he can reject an application on the ground that it is barred by Section 9(1) of the Act.

(4) If the mark sought to be registered in Part A is a name, signature or word, which does not fall in Clauses (a) to (d) of Section 9(1), it cannot be registered except upon evidence of distinctiveness.

(5) If the application is for registration of a mark, which consists of a name, signature or word, which squarely falls within any of the clauses (a to d) of Sub-section (1) of Section 9, it could be registered in Part A without evidence of distinctiveness as the mark is deemed to be inherently distinctive.

(6) To entitle registration under Clause (a) of Section 9(1), the name in question must be (a) real, (b) represented in a special or particular manner to prevent the mark being unintentionally infringed by an honest use of his own name or that of his firm by some other party; and (c) the mark must contain such a distinction as may indicate that the goods bearing the mark are the goods of the applicant. The distinction must be such as is adapted to distinguish those goods for the purpose of fulfilling the definition of 'trade mark'.

(7) In order to sustain a claim for registration under Section 9(1)(c), the applicant must prove:

(i) That the applicant invented or coined the word in question;

(ii) That the word is not found in any dictionary of any language spoken in any part of this country or in any other commonly known language;

(iii) That the word is unknown in the use of the languages spoken in India; and

(iv) That whatever familiarity the coined word has acquired is due exclusively to the fact that it has been used by a particular trader (the applicant for registration) and the mark is an indication of origin of his goods.

(8) The discretion vested in the Registrar to register or decline to register a trade mark is principally intended to be exercised by him and ought not readily be upset by the High Court if the discretion has been exercised in a judicial manner. This relates particularly to questions touching technical points on which the Registrar is necessarily expected to have much larger experience on account of his being adapted to continually hear objections and answers to objections against registrability. The High Court will, therefore, normally lean in favour of the decision of the Registrar and would not readily depart from his conclusions except upon questions of pure law or on findings based on appraisal of evidence.

39. Applying the above principles to the facts of this case and in view of the findings already recorded by me, I allow this appeal and reverse the order of the Assistant Registrar rejecting the application of the appellant for registration of his trade mark 'UIS' as depicted in the application in relation to hand tools in class 8. The application of the appellant is granted and it is directed that the trade mark of the appellant be registered in Part A and/or in Part B of the Register of trade marks. There would be no order as to costs of this appeal.